Spotlight on Upcoming Oral Arguments – November 2015

Tuesday, November 3, 2015

Aqua Products v. Zodiac Pool Systems, No. 15-1177 – 10:00 A.M. Courtroom 201

This appeal concerns motions to substitute claims in an inter partes review (IPR) proceeding. The Federal Circuit will consider whether the PTAB erred in finding that substitute claims failed to overcome the prior art without analyzing all the limitations in these claims and whether the patent owner has the burden of proof to show that the substitute claims are not invalid over the cited references of record. The PTO has intervened in the case.

Synopsys v. Mentor Graphics, No. 14-1516, -1530 – 10:00 A.M. Courtroom 203

In this appeal, the Federal Circuit will consider whether the PTAB erred by instituting review but failing to issue a final written decision on the patentability of each of the claims challenged by the petitioner. The PTO has intervened in the case, and SAS Institute has submitted an amicus brief supporting the petitioner Synopsys.

Synopsys v. Lee, No. 15-1183 – 10:00 A.M. Courtroom 203

In this case, Synopsys filed an IPR petition with the PTAB. When the PTAB failed to institute review of, and make a final decision on, every challenged claim, Synopsys filed an action in district court under the Administrative Procedure Act (APA), which was dismissed for lack of jurisdiction. This appeal concerns whether Congress barred APA challenges to the PTO’s regulations on IPRs in district court.

Wednesday, November 4, 2015

Click-to-Call Technologies v. Oracle, No. 15-1242 – 10:00 A.M. Courtroom 203

In another appeal involving IPRs, the Federal Circuit will consider whether service of a complaint alleging patent infringement, which was later dismissed without prejudice, triggers the one-year statutory time bar to filing an IPR petition under 35 U.S.C. § 315(b). The PTO has intervened in the case, arguing that the PTAB’s institution decision is not reviewable.

Thursday, November 5, 2015

In re: Brunetti, No. 15-1109 – 10:00 A.M. Courtroom 402

In this case, the PTO refused registration of “FUCT” as a trademark for use with a clothing line because such a mark would be understood as synonymous with its vulgar counterpart. This appeal concerns whether the statute’s prohibition on the registration of scandalous marks is consistent with the First and Fifth Amendments, an issue on which the Federal Circuit heard oral arguments en banc last month in In re Tam.